11437018 (B.P.A.I. Jun. 16, 2010)

Ex Parte Kintzley et al

Board of Patent Appeals and InterferencesJun 16, 2010

11437018 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TOM G. KINTZLEY, JOHN HELKEY, IVAN HOLTE, LEE ROY JOHNSON, and TODD R. MILLER ________________ Appeal 2009-008666 Application 11/437,018 Technology Center 1700 ________________ Decided: June 16, 2010 ________________ Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-008666 Application 11/437,018 2 A. Introduction1 Tom G. Kintzley, John Helkey, Ivan Holte, Lee Roy Johnson, and Todd R. Miller (“Kintzley”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-20. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. The subject matter on appeal relates to wood composites comprising phenol formaldehyde resins, a process of making such composites, and the resin binder composition. According to the 018 Specification, prior art wood composites typically comprise adhesive binders that contain urea formaldehyde (“UF”) resins, which are said to be inexpensive, to have good bonding properties, desirable tack, and to cure quickly. (Spec. 1, [0003].) UF resins, however, are said to lack durability for exterior applications (id. at 2, [0005]), and to have undesirable levels of formaldehyde (id. at [0006]). Prior art lower formaldehyde-emitting replacements are said to be slower curing and to have decreased internal bond strengths. (Id.) The claimed composites are said to overcome these deficiencies without having any added urea-formaldehyde resins. (Id. at [0008].) 1 Application 11/437,018, Wood Composites, Methods of Production, and Methods of Manufacture Thereof, filed 18 May 2006, claiming the benefit of a provisional application filed 3 June 2005. The specification is referred to as the “018 Specification,” and is cited as “Spec.” The real party in interest is listed as Hexion Specialty Chemicals, Inc.. (Amended Appeal Brief, filed 14 July 2008 (“Br.”), 3.) 2 Office action mailed 27 December 2007 (“Final Rejection”; cited as “FR”). Appeal 2009-008666 Application 11/437,018 3 Representative Claim 1 is reproduced from the Claims Appendix to the Principal Brief on Appeal: 1. A wood composite comprising the cure product of an adhesive binder composition comprising a wood material and a thermosetting composition comprising, a phenol-formaldehyde resin, a polyvinyl ester resin, and a protein; provided, however, the wood composite does not contain any added urea-formaldehyde resin. (Claims App., Br. 14; paragraphing and indentation added.) The Examiner has maintained the following grounds of rejection:3 A. Claims (1-4, 6-10), (11-15, 17-19), and (20) stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ash4 and Riebel.5 C. Claims (5) and (16) stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ash, Riebel, and Johns.6 3 Examiner’s Answer mailed 15 September 2008. (“Ans.”) Rejections stated separately by the Examiner are indicated by parentheses. 4 Jacob R. Ash and Alan L. Lambuth, Method of Preparing Adhesives Comprising a Phenolic Resin and a Protein, U.S. Patent 21,718,639 (1957). 5 Michael J. Riebel et al., Board Stock and Method of Manufacture from Recycled Paper, U.S. Patent 5,611,882 (1997). 6 William E. Johns, Particle Board Process Using Furan Resin/Isocyanate Binder, U.S. Patent 4,376,745 (1983). Appeal 2009-008666 Application 11/437,018 4 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Kintzley argues, inter alia, that the Examiner has not established a reason to combine the teachings of Ash, which is concerned with plywood adhesives, with the teachings of Riebel, which is concerned with curable cellulose mixtures said to be useful for producing synthetic boards from recycled paper. More specifically, Kintzley argues that Ash teaches plywood adhesives that comprise a water soluble protein, a phenol- formaldehyde resin, and sodium silicate. Ash does not, in Kintzley’s view, teach polyvinyl acetate as an additive for any purpose. In contrast, Kintzley argues, Riebel teaches that polyvinyl acetate may be added to a cellulose mixture including a protein based adhesive binder, but makes no mention of phenol-formaldehyde resins. In Kintzley’s words, The Examiner has not established that a person of ordinary skill in the art would expect optional additives that are useful in a protein binder to be useful in a phenol-formaldehyde resin, nor pointed to a teaching, suggestion, or motivation to combine known elements in the fashion claimed, and therefore has not established a case of prima facie obviousness over the cited combination of references. (Br. 10, ll. 1-5; citations omitted.) The Examiner finds that Ash and Riebel are both concerned with wood adhesives. (FR 2; Ans. 3.) The Examiner maintains further that it would have been obvious to use polyvinyl acetate in the adhesive of Ash in order to make the adhesive more moisture resistant, as suggested by Riebel. (Id., citing Riebel, col. 7, ll. 21-26.) Appeal 2009-008666 Application 11/437,018 5 Kintzley responds, inter alia, that Riebel is not concerned with wood adhesives, noting the comparisons drawn by Riebel between the disclosed materials and wood or wood-like materials. (Reply Br. 6, citing Riebel col. 4, ll. 45-48, col. 5, ll. 58-60, and Table V [at column 14].) Kintzley’s arguments are well taken. The derived board stock described by Riebel is based on cellulose, not wood. Indeed, Riebel teaches that “[a] desirable attribute of newsprint is that the derived cellulose fibers are essentially lignin-free, which facilitates the surface absorption and wetting of the fibers of the cellulose with the adhesive binder.” (Riebel, col. 7, ll. 47-51.) Riebel continues, “Newsprint, and most uncoated printing papers are essentially lignin free, since the lignin is typically removed during the processing of the wood fibers.” (Id. at ll. 51-54.) Thus, the Examiner’s finding that Riebel is directed to wood adhesives is contradicted by Riebel. Indeed, adhesives taught by Riebel would not be expected to bond well to wood, due to the presence of lignen in wood. Thus, the adhesives taught by Riebel are not equivalents to the adhesives taught by Ash for plywood. As the Examiner has not come forward with any other credible reason that a person having ordinary skill in the art would have had a reasonable expectation of successfully adding polyvinyl acetate to the adhesive compositions taught by Ash, we REVERSE the rejection of claim 1. The Examiner’s rationales for the rejection of the remaining claims due not cure this defect. Accordingly, we REVERSE all the rejections of record. Appeal 2009-008666 Application 11/437,018 6 As the Examiner has failed to establish a prima facie case of obviousness, we need not consider the evidence and arguments advanced by Kitzley concerning unexpected results. C. Order We REVERSE the rejection of claims 1-4, 6-10, 11-15, 17-19, and 20 under 35 U.S.C. § 103(a) in view of the combined teachings of Ash and Riebel. We REVERSE the rejection of claims 5 and 16 under 35 U.S.C. § 103(a) in view of the combined teachings of Ash, Riebel, and Johns. REVERSED cam HEXION SPECIALTY CHEMICALS, INC., 12650 DIRECTORS DRIVE SUITE 100 STAFFORD, TX 77477